Fashion and luxury brands routinely embrace the same naming and design conventions – from simplified logos and understated branding to unconventional spellings and names that are meant to evoke heritage (even when a brand is relatively new). But the widespread adoption of a particular branding practice does not necessarily make the resulting trademarks easier to register or protect. The legal significance of these branding trends depends, in part, on what they establish about how consumers perceive the marks themselves.
That distinction is at issue in a recent trademark dispute involving THE JONES, a proposed hospitality brand whose applicant argued that consumers had become accustomed to hotels bearing names consisting of THE followed by a surname.
The Limits of Industry Naming Conventions
In a nonprecedential October 21 decision, the Trademark Trial and Appeal Board (“TTAB”) affirmed the U.S. Patent and Trademark Office’s refusal to register THE JONES for hotel, restaurant, entertainment, fitness, beauty, and related services. Appealing the refusal, Solomon & Silver Limited argued that consumers are accustomed to hotel names consisting of THE followed by a surname and would therefore perceive THE JONES as an indicator of source rather than primarily as a surname.
The TTAB disagreed, finding that THE JONES fell within Section 2(e)(4) of the Lanham Act, which bars registration on the Principal Register of marks that are “primarily merely surnames” absent a showing of acquired distinctiveness. The Board noted that Jones is “one of the most common surnames in the U.S. and would likely be recognized as such by the purchasing public,” and adding THE would not alter that.
Solomon & Silver pointed to examples – and third-party registrations for – hotels using similar naming conventions, including THE MOORE, THE CRAWFORD, THE PITTMAN, THE BARNES, and THE WILLIAMS. The TTAB found that the evidence did not necessarily establish widespread use of the claimed naming convention and did not show how consumers perceived the cited marks.
The decision draws a line between evidence of an established naming convention and evidence of how consumers understand marks that follow it. While Solomon & Silver showed that some hotels use surname-based names, that evidence did not establish that consumers would perceive THE JONES name as something other than primarily a surname. The prevalence of a branding practice may be relevant to registration, but its evidentiary value depends on what it establishes about the particular mark.
Why Some Surnames Qualify
The outcome contrasts with a 2020 nonprecedential TTAB decision involving THE MERRIWEATHER, in which the Board reversed a surname-based refusal for hotel services. In distinguishing the decisions, the Board in this case noted that Merriweather was a relatively uncommon surname with possible meanings beyond its use as a last name, whereas Jones is exceptionally common and the record contained no evidence of alternative meanings.
The applications also differed in scope. THE MERRIWEATHER mark covered hotel services, while Solomon & Silver sought registration for a broader range of services. Even if THE JONES had been shown to have a primarily non-surname significance in connection with hotel services, the Board noted that the record lacked evidence supporting such a finding for the other services covered by the application.
And interestingly, the Board addressed whether a surname’s connection to the business matters. Although Solomon & Silver confirmed that Jones did not identify anyone associated with the company, the Board treated that fact as neutral. If such a connection existed, that could support a surname refusal, but its absence does not weigh against one. In other words, for businesses adopting names unrelated to their founders, a lack of connection offers no particular advantage under Section 2(e)(4).
THE BIGGER PICTURE: THE JONES raises a question that extends beyond surname-based marks. What does the widespread adoption of a particular branding trend actually establish for trademark purposes?
For fashion and luxury businesses, the question is relevant to everything from the industry’s embrace of simplified logos and understated – or “blanded” – branding to the adoption of unconventional spellings and similar naming conventions. These trend in branding may become commercially popular (until they are no longer popular), but their prevalence does not necessarily establish the distinctiveness or registrability of the resulting marks. Their evidentiary value depends on what they demonstrate about how consumers perceive the particular mark at issue.
Following an established branding convention may come with commercial upsides, but it does not necessarily make the resulting mark easier to register or protect.
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